Following Coverage Of Trademark Dispute, Lawyer Demands Image On News Story Be Taken Down As Infringing

from the no-it-isn't dept

There must be something in the air to do with tacos these days. On the heels of our post about the silly efforts chain Taco John's is undertaking to retain sole trademark ownership of the ubiquitous "Taco Tuesdays" phrase, we have another trademark dispute involving everyone's favorite hispanic delicacy. In this instance, however, the focus of this post won't be on the dispute between the two restaurants, but we can start there anyway.

The owner of a 10-week-old taco business said he'll change its name after a California-based restaurant's lawyer claimed it infringes on theirs. Tito Garza, 29, of Brattleboro, received a cease-and-desist notice last week from a Los Angeles trademark lawyer demanding he stop using the name, Tito's Tacos of Vermont.

Garza said he doesn't have the resources to tangle with a law firm in California, so he'll change the name of his venture, though he hasn't decided what yet.

So, yeah, that's annoying. A guy can't name his restaurant after himself because of a trademark owned by another company clear across the nation. We could spend some time discussing whether there is any actual customer confusion to be had here, or whether or not a trademark consisting of a common name and a common food was worthy of such protection. But, instead, let's focus on the other part of this trademark dispute.

It seems that the lawyers for the Tito's Tacos in California are a bit confused as to how trademark law works in conjunction with the basic federal laws governing how the press operates. The link above comes from the Brattleboro Reformer, a news group focusing on local news in Vermont. By reporting previously about a local food festival, and including images of Tito Garza selling his tacos at it, the lawyer for Tito's Tacos seems to think it too has violated his client's trademark rights.

Meanwhile, Victoroff also has requested that the Brattleboro Reformer remove from its website a picture of Garza selling tacos at the Brattleboro BaconFest because his Tito's Tacos banner hangs in the background. The photo, taken on Saturday, Sept. 17, also was the main image on the front page of the Monday, Sept. 19, Reformer.

"The news story and photograph appearing at [the Reformer's website] ... is infringing the Tito's Tacos trademark by displaying and distributing content referring to a food vendor named Tito Garza using the Tito's Tacos trademark in Brattleboro, Vermont, and elsewhere in violation of state and federal trademark law," Victoroff wrote in an email to the Reformer.

Nothing about that is remotely correct. To start with, the news group can simply shout "fair use!" and walk away from the threat, because news organizations have a longstanding right to include images of the subjects on which they report. Imagine if, in an age where media is dominated by the image, a company could demand takedown of any trademark-related images in this manner. Reporting would breakdown entirely, particularly on television. Add to that that the one allegedly violating the trademark in question is Tito Garza, not the news group, and one wonders how this threat could get any dumber.

Unsurprisingly, The Reformer has declined to remove the image.

"The photo in question depicts a local food vendor whose sign identifies his business as Tito's Tacos," wrote Rutberg. "While this use of the name Tito's Tacos may indeed infringe on your client's registered trademark, it is our opinion that the photo in question does not constitute an infringement of your client's trademark. At best it is a 'fair use' of trademarked material."

Rather than accept this lesson and lick his wounds, Victoroff actually responded by insisting the paper was wrong and again demanding the image be taken down. It hasn't been, of course.

One wonders if this ignorance of the law might give Tito Garza pause as to whether this is a fight he can win.

Reader Comments

Time to add another to the tally shall we?

Looks like yet another group that either doesn't know that 'Fair Use' exists, knows it exists but hopes they can bluff the other person into thinking otherwise, or doesn't think that reporting qualifies.

Given they doubled down on the threat after being told off the first time might be time to bring out the classics in the form of an 'Arkell v. Pressdram' style response.

Wow... you think he would know better

However, he specializes in IP law. And he has been a Cal lawyer since 1979. That is a very senior lawyer with over 35 years of experience. You would think that someone who has been in this game this long would know better.

So.... I'm thinking that some newby associate, or even a clerk in his office, is making these claims.

Re: Wow... you think he would know better

Not necessarily, working as a lawyer for that long I imagine bluffs and threats are practically second nature by this point, especially given the absolutely insane 'stick' copyright/patent/trademark gives you to beat someone over the head with in the form of monetary fines or intentional or even accidental infringement.

When you know that going to court is an expensive undertaking, win or lose, and you know that your target almost certainly can't afford to fight back, either because they simply don't have the money or because they can't risk the bank-breaking fines that are in the wings should the case go against them, bluffs and empty threats become the weapon of choice. Minimal effort, maximum result.

Re: Re: Re: Wow... you think he would know better

Two different ways I could answer that I suppose.

1) Never? No. To any extent that any lawyer would ever consider it a credible issue and change their actions because of it? Yes.

Witness for example the fact that it took years for any of the Prenda lot to face any sort of punishment from the various Bars(assuming they even have been, Hansmeier for example seems to have been 'dis-barred' by the Minnesota Supreme Court, no idea if that 'counts' offhand), despite all their 'courtroom shenanigans'. Unless the california bar is much, much better at policing lawyers within their 'jurisdiction', or the california bar sets much higher standards for lawyers I'd say it's pretty clear that lawyers have a hefty amount of 'wiggle room' to work with such that 'accidentally over-stating your client's position' or 'forgetting a particular bit of law' wouldn't even be considered worth mentioning to them.

2) As a sleazy lawyer might say, 'define harassing'. Does sending out a legal letter wherein your position might not be quite as rock solid as you present it as count as 'harassing'? How about sending out a letter 'advising' the recipient that they're welcome to bring the matter to court... but win or lose the costs to do so are likely to bankrupt them anyway, is that a 'friendly warning', 'harassment', or neither?

Re: Re: Re: Wow... you think he would know better

The counter is, "Sure, our litigation position isn't supported by probable cause, but our purpose isn't to harass or maliciously injure anyone. We only care about our own business, and only sent this letter because we think it's to our advantage, not to hurt them. So this rule doesn't apply."

A shame...

It seems like the most basic use of the first amendment to take an unaltered photograph that relates to the topic of an article (or just a photo by itself). It's factual that the banner was present when the picture was taken. The most I would do is update the caption to include the sentence: "Some silly lawyers in California think the banner in the photograph is a trademark infringement and wanted us to take it down but we stand by the first amendment."

Don't need to imagine.

I don't need to imagine it. I remember a long time ago having to listen to the Olympic on the radio cause TV was scarce, and in 2016 Olympics with stick figures depicting swimmers. Trademark is awesome.